Philippe Duchateau et al.

Patent Trials and Appeals Board

Nov 26, 2019

15080232 - (R) (P.T.A.B. Nov. 26, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/080,232 03/24/2016 Philippe DUCHATEAU MEGA5US15 1244
76392 7590 11/26/2019
ARRIGO, LEE, GUTTMAN & MOUTA-BELLUM LLP
2200 Pennsylvania Ave NW
Suite 400E
WASHINGTON, DC 20037
EXAMINER
MARVICH, MARIA
ART UNIT PAPER NUMBER
1633
NOTIFICATION DATE DELIVERY MODE
11/26/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
SAL@ARRIGO.US
legaladmin@arrigo.us
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PHILIPPE DUCHATEAU, CHRISTOPHE PEREZ,
SYLVIA BRUNEAU, JEAN-PIERRE CABANIOLS,
JULIANNE SMITH, and AGNES GOUBLE

Appeal 2018-007697
Application 15/080,232
Technology Center 1600
BEFORE DEBORAH KATZ, JOHN G. NEW, and JOHN E. SCHNEIDER,
Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING

Appeal 2018-007697
Application 15/080,232
2
STATEMENT OF THE CASE
Appellant1 filed a Request for Rehearing (“Req. Reh’g”) dated
October 24, 2019 of the Decision on Appeal mailed September 27, 2019
(“Decision”). The Decision sustained the Examiner’s rejection of claims
17–39 for lack of enablement and claims 17, 19–22, 24, 26-–32, 34–37, and
39 as being obvious under 35 U.S.C. § 103(a)2. See Decision at 10.
Appellant seeks rehearing of the Board’s rehearing “with respect to the
rejection of claim 35 under 35 U.S.C. § 112, ¶1, for lack of enablement.”
Req. Reh’g 1.
Upon consideration of Appellant’s Request, we deny the Request.
A request for rehearing “must state with particularity the points
believed to have been misapprehended or overlooked by the [Patent Trial
and Appeal Board, hereinafter “Board”].” See 37 C.F.R. § 41.52(a)(1). The
Rule also states that arguments not raised in the briefs before the Board and
evidence not previously relied upon in the briefs “are not permitted in the
request for rehearing except as permitted by paragraphs (a)(2) through (a)(4)
of this section.”
A review of the briefs submitted by Appellant reveals that claim 35
was not separately argued by Appellant but that all claims were argued
together. See Appeal Br. 2–7; Reply Br. 2–8. Our rules provide that “the
failure of appellant to separately argue claims which appellant has grouped
together shall constitute a waiver of any argument that the Board must

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Cellectis
S.A. Appeal Br. 1.
2 Arnould, US 2004/0002092 A1, published Jan 1, 2004; Draper, US
2004/0054156 A1, March 18, 2004; Norris, US 2004/0220123 A1, Nov. 4,
2004.
Appeal 2018-007697
Application 15/080,232
3
consider the patentability of any grouped claim separately.” 37 C.F.R. §
4.37(c)(iv). Therefore Appellant waived any argument that claim 35 is
separately patentable. Appellant’s argument that claim 35 is separately
patentable represents a new argument that is not permitted.
Our rules regarding request for rehearing list three exception where
new arguments or evidence is permitted. They are:
- A new argument based upon a recent decision either of the Board
of the Federal Circuit;
- New arguments responding to a new grounds of rejection; or
- New arguments that the Board’s decision contains an undesignated
new ground of rejection.
37 C.F.R. § 41.52 (a)(2). Appellant has not shown that any of these
exceptions apply to this Request.
CONCLUSION
For the reasons stated above, Appellant’s Request for Rehearing is
denied.
Outcome of Decision on Rehearing:
Claims 35 U.S.C § Basis Denied Granted
35 112 enablement 35
Overall
Outcome
35

DENIED